The Complainant is Williams-Sonoma, Inc. of Wilmington, Delaware, United States of America (“US”) represented by Kilpatrick Townsend & Stockton LLP, US.
The Respondent is Zhao Jiafei of Huai’an, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. Also on June 4, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on June 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2014.
The Center appointed Ian Blackshaw as the sole panelist in this matter on July 16, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a premier specialty retailer of home and office furnishings and sells nationwide through retail stores, catalogs, and the Internet. The Complainant’s brands, including its “Pottery Barn” and “Williams Sonoma” lines of home furnishings, kitchen products, and textiles, are among the most successful brands in the industry.
From its beginnings in 1956 selling an array of products designed for consumers, the “Pottery Barn” and “Williams-Sonoma” brands have expanded to hundreds of stores worldwide; a direct mail business that distributes millions of catalogues annually; and highly successful e-commerce sites at “” and “www.williams”.
The brands have sold many millions of dollars’ worth of merchandise worldwide.
According to the Registrar, the disputed domain names and were registered in April 2014 and February 2014, respectively. 5. Parties’ Contentions A. Complainant
The Complainant makes the following assertions: (i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the exclusive owner of a US Trademark Registration for the famous POTTERY BARN and WILLIAMS-SONOMA Marks and also maintains various US Registrations for POTTERY BARN-formative Marks and WILLIAMS-SONOMA-formative Marks, such as those listed in the table below, all of which are valid, subsisting, and have been continuously used since on or before their first-use dates. Mark Country Reg. No. First Use/ Date Issued
POTTERY BARN
United States
2021077
At least as early as 1956
Issued December 3, 1996
THE POTTERY BARN
United States
0959383
At least as early as 1956
Issued May 22, 1973
THE POTTERY BARN
United States
0976194
At least as early as 1956
Issued January 8, 1974
POTTERY BARN KIDS
United States
2383910
At least as early as 1999
Issued September 5, 2000
POTTERY BARN KIDS
United States
3397441
At least as early as 1999
Issued March 18, 2008
POTTERY BARN BABY
United States
2709241
At least as early as 2001
Issued April 22, 2003
POTTERY BARN BABY
United States
3055841
At least as early as 2004
Issued January 31, 2006
WILLIAMS-SONOMA
United States
2353758
At least as early as 1956
Issued May 30, 2000
WILLIAMS-SONOMA
United States
2375190
At least as early as 1956
Issued August 8, 2000
WILLIAMS-SONOMA
United States
2410528
At least as early as 1958
Issued December 5, 2000
WILLIAMS-SONOMA
United States
2442099
At least as early as 1963
Issued April 10, 2001
WILLIAMS-SONOMA
United States
2420980
At least as early as 1964
Issued January 16,2001
WILLIAMS-SONOMA
United States
1777864
At least as early as 1970
Issued June 22, 1993
WILLIAMS-SONOMA
United States
2383426
At least as early as 1975
Issued September 5, 2000
WILLIAMS-SONOMA
United States
2428155
At least as early as 1989
Issued February 13, 2001
WILLIAMS-SONOMA
United States
2909564
At least as early as 1997
Issued December 14, 2004
WILLIAMS-SONOMA
United States
2837950
At least as early as 1997
Issued May 4, 2004
WILLIAMS-SONOMA
United States
2786041
At least as early as 1999
Issued November 25, 2003
Under the POTTERY BARN and WILLIAMS-SONOMA Marks, for many years, the Complainant has offered a wide range of products and services, including, amongst many others, mail order and online catalogue services, cooking products, housewares, furniture, bedding, toys, rugs and window treatments, and other printed materials. Evidence of such goods and services has been provided to the Panel.
The Respondent registered the disputed domain names that consist of verbatim reproductions of the Complainant’s POTTERY BARN and WILLIAMS-SONOMA Marks, followed by the addition of the generic Top-Level Domain (“gTLD”) “.info” to each of them.
Given the Respondent’s exact reproduction of the Complainant’s POTTERY BARN and WILLIAMS-SONOMA Marks in the disputed domain names, and the Complainant’s extensive and long-standing use of these Marks, consumers will inevitably experience confusion as to the source of the and disputed domain names and websites.
Indeed, the Respondent’s identical reproductions of the Complainant’s famous Marks in the disputed domain names constitute blatant attempts to create such confusion. As a result of that consumer confusion, those who search the Internet for information about the Complainant or the Complainant’s products by using the Complainant’s POTTERY BARN and/or WILLIAMS-SONOMA Marks likely will be directed to the Respondent’s websites, thereby damaging the Complainant.
It is well-established that the likelihood of confusion between a mark and a domain name is not eliminated by the addition of a gTLD such as “.info.” See, e.g., Microsoft Corp. v. Mehrotra,WIPO Case No. D2000-0053 (finding that the domain name is identical to the complainant’s mark); see also BMW AG v. Loophole,WIPO Case No. D2000-1156 (finding that there is “no doubt” that the domain name is identical to the complainant’s well-known and registered BMW trademarks); Military Order of the Purple Heart of the United States of America, Inc., and Military Order of the Purple Heart Service Foundation, Inc. v. C, Jason Groeneweg,WIPO Case No. D2013-0494 (transferring domains and because, inter alia the “addition of a generic term, such as ‘outdoors,’ along with the top level domain ‘.com’ or ‘.org’ does not defeat confusing similarity”).
The Complainant has established its rights in the POTTERY BARN and WILLIAMS-SONOMA Marks through valid trademark registrations that predate the Respondent’s registration of the disputed domain names.
Accordingly, the domain name is confusingly similar to the POTTERY BARN Mark and the domain name is confusingly similar to the WILLIAMS-SONOMA Mark under the Policy. (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names
The Complainant has never authorized the Respondent to use the Complainant’s Marks or name in any way.
Furthermore, the Respondent obviously has never been known by the POTTERY BARN Mark, the WILLIAMS-SONOMA Mark, or the disputed domain names. The Respondent’s name is “Zhao Jiafei,” which does not even remotely correspond to the Complainant’s Marks in any way. The Respondent simply has appropriated and is unlawfully using the Complainant’s Marks on its websites and does not, and, as a matter of law cannot, establish that it is rightfully “known by” such names.
In no way does the Respondent use the domain name for a bona fide offering of goods or services. It rather uses an identical name for the purpose of passive holding and to divert consumers seeking the Complainaint’s goods to the Respondent’s website. Prior UDRP decisions hold that blatant use of another’s mark in a passively-held domain name, or in a domain name used to divert traffic, cannot constitute a “legitimate use” in connection with a bona fide offering of goods or services. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (holding that the challenged domain name, , did not resolve to a website or other online presence, and that such unauthorized use of complainant’s trademark paired with passive holding failed to create any “rights” or “legitimate interests” in the domain name for respondent).
Neither does the Respondent use the domain name for a bona fide offering of goods or services. It rather uses an identical name for the purpose of passive holding to divert consumers seeking the Complainant’s goods to the Respondent’s website, and likely in furtherance of a phishing scheme. A number of Prior UDRP decisions have held that neither of these activities - (1) using an identical or confusingly similar domain name to divert consumers looking for the Complainant’s website; and (2) using an identical or confusingly similar domain name to facilitate a phishing scheme can constitute a bona fide offering of goods or services or a legitimate use. See, e.g., Chanel, Inc. v. Domain Privacy Group, Inc. / Charlene Newport,WIPO Case No. D2009-0081 (no legitimate interest where domain name owner is not selling the trademarked items and the Registrant does not have trademark owner’s express permission to use the mark; transfer of domain name ).
Accordingly, the Respondent’s use of the disputed domain names is not a “legitimate, non-commercial, or fair use”. On the contrary, the Respondent’s objective is nefarious: to prevent the Complainant from interacting with consumers seeking the Complainant’s goods and services through domain names that are essentially reproductions of the Complainant’s famous POTTERY BARN and WILLIAMS-SONOMA Marks, and to mislead and divert such online customers to the Respondent’s illicitly-obtained and disputed domain names in furtherance of its phishing scheme.
(iii) The disputed domain names were registered and are being used in bad faith
The Respondent has used reproductions of the Complainant’s Marks in order to create confusion and attract Internet users to its websites, and has passively held the disputed domain names. Prior UDRP panels hold that such conduct is conclusive of bad faith.
The Respondent engaged in this conduct with prior knowledge of the Complainant’s famous POTTERY BARN and WILLIAMS-SONOMA Marks. The Complainant’s extensive advertising and sales of products under or in connection with the POTTERY BARN and WILLIAMS-SONOMA Marks, and its registration of those Marks, put beyond any reasonable doubt the Respondent’s actual and constructive knowledge of the Complainant’s trademark rights.
The panel’s decision in Telstra Corporation Limited v. Nuclear Marshmallows, supra is instructive here. In Telstra, the panel addressed a respondent’s registration of (constituting a reproduction of the complainant’s trademark) and subsequent passive holding of that domain name. As regards bad faith registration, the Telstra panel explained:
“Given the Complainant’s numerous trademark registrations for, and its wide reputation in, the word ... it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name . It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.”
The facts here are analogous, and the result should be the same. Accordingly, the Respondent registered the disputed domain names in bad faith.
As explained above, the Complainant’s POTTERY BARN and WILLIAMS-SONOMA Marks are well-known and have enjoyed such status for many decades. Its POTTERY BARN-formative and WILLIAMS-SONOMA-formative Marks likewise are known worldwide. There is no doubt, it is asserted, that the Respondent was aware of the Complainant’s POTTERY BARN and WILLIAMS-SONOMA Marks prior to the registration of the disputed domain names on January 24, 2013 and on February 14, 2014 respectively.
Accordingly, because of the Respondent’s clear knowledge of the Complainant’s trademark rights, and because the Respondent cannot show any good faith use of the disputed domain names, the Respondent’s passive holding of these disputed domain names constitutes bad faith use of them. B. Respondent
The Respondent, having been duly notified of the Complaint and of this proceeding, did not reply to the Complainant’s contentions nor take any part in the proceeding. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain names, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP decisions that, where the domain names incorporate a complainant’s registered trademarks, this may be sufficient to establish that the domain names are identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
The disputed domain names incorporate verbatim the POTTERY BARN and WILLIAMS-SONOMA Marks, which makes the disputed domain names identical to the well-known and famous POTTERY BARN and WILLIAMS-SONOMA Marks. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products marketed under its well-known and famous POTTERY BARN and WILLIAMS-SONOMA Marks.
The Panel agrees with the Complainant’s contention that the addition of the gTLD “.info” to the disputed domain names does not avoid confusing similarity. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, supra. See also Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
In view of all of the above, the Panel finds that the disputed domain names are identical to the Complainant’s well-known and famous POTTERY BARN and WILLIAMS-SONOMA Marks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in (including lengthy commercial use of the same).
The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain names (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain names. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in the proceeding. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In the view of the Panel, the adoption by the Respondent of domain names identical to the Complainant’s well-known and famous POTTERY BARN and WILLIAMS-SONOMA Marks, which the Panel considers, as asserted above by the Complainant, was not by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known and famous POTTERY BARN and WILLIAMS-SONOMA Marks and also the valuable goodwill that the Complainant has established in these trademarks through prior and lengthy commercial use, as evidenced above.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain names.
Therefore, for all of the above reasons and also those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which evidence bad faith registration and use. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain names, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain names incorporating verbatim therein the Complainant’s well-known and famous POTTERY BARN and WILLIAMS-SONOMA Marks, is trading unfairly on the Complainant’s valuable goodwill established in such Marks.
Furthermore, see Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. Applicable to the present case, the use by the Respondent of the disputed domain names is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain names were registered and are being used in bad faith.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain names by chance, but, as noted above, on the basis of clearly being aware of the notoriety of the Complainant’s well-known and famous POTTERY BARN and WILLIAMS-SONOMA Marks and their prior and lengthy commercial use.
Also, the Panel finds that the Respondent’s use of the disputed domain names which has the effect of redirecting Internet users interested in the Complainant’s products to various websites for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright,WIPO Case No. D2007-0267.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all of these particular facts and circumstances into account and for all the above-mentioned reasons, as well as the other arguments advanced above by the Complainant in its contentions, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, and , be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Date: July 17 2014
Full & Egal Universal Law Academy